Ex Parte Hansen et al

Patent Trial and Appeal BoardApr 5, 2016

12506193 (P.T.A.B. Apr. 5, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/506,193 07/20/2009 John P. Hansen 15233.001 3640 41689 7590 04/05/2016 BRADLEY P. HEISLER HEISLER & ASSOCIATES 3017 DOUGLAS BOULEVARD, SUITE 300 ROSEVILLE, CA 95661 EXAMINER MAI, HAO D ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 04/05/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHN P. HANSEN and JEFFREY P. FISHER ____________________ Appeal 2013-010671 Application 12/506,193 Technology Center 3700 ____________________ Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and ERIC C. JESCHKE, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE John P. Hansen and Jeffrey P. Fisher (Appellants) filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated March 28, 2016, of our decision mailed January 27, 2016 (hereinafter “Decision”). In the Decision, we affirmed the Examiner’s rejections of claims 1–6, 8–17, 19–21, 25, and 31–36, designated our affirmance as a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b), and entered a new ground of rejection pursuant to our same authority. Appeal 2013-010671 Application 12/506,193 2 DISCUSSION A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure (MPEP) § 1214.03 (8th ed., Rev. 9, Aug. 2012)). It may not rehash arguments originally made in the Brief, neither is it an opportunity to merely express disagreement with a decision. It may not raise new arguments or present new evidence except as permitted by paragraphs (a)(2) though (a)(4). Id. The proper course for an Appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. Appellants allege that: The Board has overlooked arguments presented by the Appellant including the first issue of whether Riley’s crown can be used in isolation without the disclosed core . . . [and] whether the cited combination renders obvious the claimed “a dental crown for a baby tooth consisting essentially of stabilized zirconia (Zr02)”. Request 1; see also Request 6. As discussed infra, we did not overlook either of these arguments. On pages 6–8 of the Decision we considered and rejected Appellants’ argument “that ‘the Riley dental crown was never meant for use as a dental crown by itself for baby teeth.’” Request 6 (citing Appeal Br. 6; Reply Br. 5). As to Appellants’ alleged argument that Riley fails to disclose “a dental crown for a baby tooth consisting essentially of stabilized zirconia Appeal 2013-010671 Application 12/506,193 3 (Zr02),” Appellants do not identify where this argument was made in the Appeal Brief. We cannot overlook an argument that was not raised.1 Accordingly, Appellants do not identify any issues which we overlooked or misapprehended. DECISION AND ORDER We grant the Request to the extent that we have considered the arguments pertaining to matters allegedly overlooked or misapprehended, but otherwise deny the Request. DENIED 1 We further note that Riley was not relied upon to teach stabilized zirconia. Rather, the rejection relies on the combined teachings of Riley and Hauptmann to meet the limitations pertaining to stabilized zirconia. See Final Act. 3–4.